Trademark Infringement Need Help and Answers

Hello I’m always thinking of new creations for my boxes so I was about to take on a couple new project themes for my valet and jewelry boxes, one being NFL’s Dallas Cowboys theme box with like colors and silver star for marketing profit also along with the Texas Long Horns theme box using a dyed like burnt orange and the UT logo, longhorn, I know these would sell like hotcakes, so my question is if I leave out certain aspects such as color difference, in other words getting them close but not exact could I get in trouble and what would happen? Would I just get a notice to stop or would more action be taken against me?

Example, a blue box with a silver star with no name is that considered infringement?

Ya know the ole saying it’s better to ask for forgiveness then to have never asked at all?

I was in the local box store buying the colors I need and the clerk brought it to my attention so I thought I’d better put more thought into this and ask.

18 replies so far

It will be interesting to hear from a lawyer, but if you are making them close enough that people know what team they are for, you will be in violation. If they sued you would loose. However, would you be big enough for them to bother, I doubt it. Even if they took notice, they would probably start with a cease and desist letter, so you could stop there.

I’d say, yes it is illegal, but as long as you don’t go big time they probably will not notice. I’ve got the think this type of thing happens all the time.

I would think it if was close enough to be mistaken for an officially licensed product either in color or design, then you run the risk of a trademark lawsuit. A good example was a couple of years ago I may have the players wrong, but I do recall the color was right…

A few years ago, there was a trademark lawsuit from one Taiwan tool importer (Jet tools I believe) had attempted to sue another Taiwan tools importer that was shipping tools in a similar white color (I believe it was Shop Fox). Unfortunately I can’t seem to find an online reference to it, maybe someone else may remember it and post a link… Anyway, the end result was the court did not side with Jet, and not only is Shop Fox still shipped over white, but now Grizzly has the Polar Bear Series, and from the last I saw, Harbor Freight has changed the 14” band saw color to white… But I assure you, those lawyers needed to defend against the suit were NOT cheap, and you being just a little guy, well, do you want to donate your house and everything your family has to the Cowboys lawyers?

They would probably start with a cease and desist letter. But they could come with a court order to
seize all your merchandise and your shop equipment. It just depends on who gets a burr under their saddle for what you did. Probably not worth it.

And close is an infringement, especially if it is clear you intended to be close for marketing reasons. Sports teams, with good reason, are very diligent about protecting their trademarked logos, colors and designs.

Something such as a blue box with a silver star could be argued as generic, but if the star is the same proportions with the same orientation as the Cowboys, you are likely going to have a hard time supporting your cause.

In any case, they have much deeper pockets than you and they could bankrupt you just by the legal fees if they find you irksome.

A close acquaintance is going through a similar process right now. They took the approach to go to the university/entity and ask what needed to be done to get an official approval to produce the merchandise. Bring a sample or better yet a drawing for them to review. They will give you what to do to go through all the needed legal steps. Going that way you could end up with them placing your items in their stores and official retailers. In my friends case the profit margin is smaller, not too much, but the overall revenue will be much higher.

You could make the stuff but only for personal use and where no $ is involved when it changes hand to other people.They are not going after us for making Dallas Cowboy or Texas A&M t-shirts. as long as we arn’t selling it. Isn’t this considered as an enthusiasticc fan? :-)

In my mind I’d know what I’m doing and going for and being careful not to step on toes, this would definitely be a fine line and taking a gamble. If I produced a (non Dallas color) box I’d be using a General Finish Federal Blue water based milk paint to dye the wood which again is not their colors and a star, I might even try a pyrographic star, worse case I’d use the coincidental card. As Roger said I need to be careful.

I pulled off the Texas flag by using the natural walnut to resemble the blue, mahogany for red and hackberry for white, maybe I could do the same here, the flag box is in my projects.

I’m glad you posted this. I see people all the time selling things with “UK” and “Indiana” on it. Especially here. I know the rivalry is pretty thick. I know i’ve been asked to make some corn hole boards and they want them painted “kentucky blue”.

For years people in New Orleans made bootleg saints things black and gold and fleur de lis. Things that say who dat or have players numbers, but never using the word Saints or the exact fleur de lis. Never any real problem until a few years ago when the saints made the super bowl and the nfl sent cease and desist letters to anyone they could find that was selling anything that toed the line. Well locals thought it was BS and the NFL never really did anything about the situation since they really have no copyright authority over the colors black and gold or the fleur de lis shape. Yes they do on a specific black and a specific gold and a specific fleur de lis, but not on all of them. Basically I’d say it depends on how big your business is, and how generic you make things a star would be pretty tough to call you out on i’d think, but the long horn might be a little closer to the line.

It might be interesting to find out just what the respective trademarks are. Would cowboys be a trademark? A Texas lone-star? Blue and silver colors? Perhaps in when used in a particular combination or intent to capitalize on the notoriety of the trademark and fan base. I think that the intent to capitalize on the notoriety of the trademark and fan base is the big question, and the big problem if you stray to close to their mark.

Just my thoughts, but I would have to agree with those above that the big people have big lawyers that they pay anyway, And, I’m sure they are nice people but I’d rather not meet them in their professional capacity.

AngieO- on a side note, make the boards unfinished and the customer can paint them any color they want.

Yes it would be an infringement. However, unless you are make a significant number of them, it would most likely end with a cease order. I live near the Sturgis Motorcycle Rally. Harley Davidson sends them to vendors all the time. Then if you don’t stop, they get ugly.

Rather than scratch the idea, which is probably the smartest thing to do without official consent, why not make one sample box and present it to them as a gift, in person, to the highest in authority person you can get to.Then, while you’re there, play it by ear – who knows?

-- "Do not speak – unless it improves on silence." --- "Following the rules and protecting the regulations is binding oneself without rope."